Good news for patent applicants with computer-implemented inventions: Canada’s Patent Appeal Board has decided to allow Yves Choueifaty’s patent application, after it was remanded back for further consideration by the Federal Court (Choueifaty v Canada (AG) 2020 FC 837). 1/x

Although the Federal Court rebuffed CIPO’s previous examination approach to patentable subject matter, CIPO had issued new examination guidelines that specifically relied on the Schlumberger Canada Ltd. Commissioner of Patents ([1982] 1 FC 845 (CA)) decision 2/x

Schlumberger is relied on for the proposition that the use of a computer in a conventional way does not impart patentability. CIPO’s new guidelines suggest that this will figure prominently in their analysis, and indeed the Patent Appeal Board’s decision makes mention of it 3/x

The PAB notes that Choueifaty’s invention “can be considered to distinguish from those of Schlumberger, however, in that the computerized calculations here are not merely for yielding information, but for permitting the computer to carry out the portfolio optimization […] 4/x

procedures with significantly less processing and greater speed.” In other words, it’s not just a computer, it’s a *better* computer. More importantly, it’s a better computer *because of* Choueifaty’s algorithms. 5/x

Or, as the PAB puts it, the “algorithm improves the functioning of the computer used to run it […] the computer and the algorithm together form a single actual invention that has physicality and solves a problem related to the manual or productive arts.” 6/x

CIPO’s new guidelines call for examiners to determine this, that is, whether claim elements “cooperate with other elements of the claimed invention so as to become part of a combination of elements making up an actual invention.” 7/x

It’s still very likely that CIPO will continue to reject computer-implemented invention claims where the computer is incidental or tangential to the invention or, as our American friends characterize it, “insignificant extra-solution activity.” 8/x

But, if this Choueifaty PAB decision is a sign of how CIPO will approach examination of patentable subject matter, then hopefully the days where computer claim elements are routinely and offhandedly dismissed as “non-essential” are behind us. 9/9